Mead Johnson & Company, LLC v. Joshua Escusa
Claim Number: FA1208001460355
Complainant is Mead Johnson & Company, LLC (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Joshua Escusa (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfamilprintablecoupon.net>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 29, 2012; the National Arbitration Forum received payment on August 29, 2012.
On August 30, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <enfamilprintablecoupon.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@enfamilprintablecoupon.net. Also on August 31, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i. Respondent is not commonly known by the disputed domain name as the WHOIS information identifies the domain name registrant as “Joshua Escusa,” which is “not even remotely similar to the Domain Name.”
ii. Respondent uses the disputed domain name primarily as a means of collecting pay-per-click revenue through its use of click-through links displayed on the resolving website.
i. Respondent’s use of the domain name to direct Internet users to competing products causes a disruption to Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii).
ii. Respondent is commercially profiting from the third-party links displayed on the resolving website by misleading Internet users as to Complainant’s affiliation with the website and content thereon.
iii. Respondent had knowledge of Complainant’s famous ENFAMIL mark prior to its registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The National Arbitration Forum was copied on documentation submitted from Respondent to Complainant, which is identified in this proceeding as “Other Correspondence.” In this document, Respondent purports to consent to the transfer of the <enfamilprintablecoupon.net> domain name.
1. Complainant has rights in its ENFAMIL mark.
2. Respondent’s <enfamilprintablecoupon.net> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant asserts that it uses the ENFAMIL mark in connection with its infant and child nutritional products, including the ENFAMIL brand of infant formula. Complainant submits that it owns numerous trademark registrations with the USPTO for the ENFAMIL mark (e.g., Reg. No. 696,534 registered April 19, 1960). Based upon these registrations, the Panel finds that Complainant has established rights in ENFAMIL mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Further, Complainant argues that Respondent’s <enfamilprintablecoupon.net> domain name is confusingly similar to Complainant’s ENFAMIL mark as the disputed domain name includes the ENFAMIL mark and the generic terms “printable” and “coupon,” as well as the gTLD “.net.” Complainant notes that a prior UDRP panel has concluded that a domain name containing the ENFAMIL mark with the added terms “coupons” and “printable,” and the gTLD “.net,” was confusingly similar to the ENFAMIL mark under Policy ¶ 4(a)(i). See Mead Johnson & Co., LLC v. J Banks, FA 1373374 (Nat. Arb. Forum Mar. 30, 2011). Based on this prior precedent, and the Panel’s own observations in the present matter, the Panel finds that Respondent’s <enfamilprintablecoupon.net> domain name is confusingly similar to Complainant’s ENFAMIL mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the disputed domain name as the WHOIS information identifies the domain name registrant as “Joshua Escusa,” which Complainant alleges is “not even remotely similar to the Domain Name.” Further, Complainant argues that Respondent has not been authorized to use the ENFAMIL mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Further, Complainant asserts that Respondent’s disputed domain name resolves to a website which “purports to provide information regarding Complainant’s Enfamil® products and coupons on purchasing such products.” See Complainant’s Annex E.
Complainant also contends that Respondent uses the disputed domain name primarily as a means of collecting pay-per-click revenue through its use of click-through links displayed on the resolving website. The Panel notes that such links appear through “AdChoices” advertisements and that Complainant’s submitted screenshot shows links for laundry detergent, a coupon to Walgreen’s for Complainant’s products, as well as links to Complainant’s website and the websites of competitors selling various products. See Complainant’s Annex E. The Panel finds that Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel notes that Complainant, within the “Background Facts” section of its Complaint states, “Respondent is likely in a pattern of registration that attempts to generate revenue off of other’s marks. Through the use of Domain Tools, Complainant has learned that Respondent has registered approximately 181 other domains.” See Complainant’s Annex D. Complainant asserts that it is reasonable to think that a “great majority” of these other domain names contain the marks of others. However, the Panel also notes that Complainant does not present this argument in its Policy ¶ 4(a)(iii) section. Further, the Panel notes that Complainant’s evidence in Annex D does not state what the domain name registrations consist of. Therefore, the Panel chooses to disregard Complainant’s contentions regarding Policy ¶ 4(b)(ii) contained in the “Background Facts” section of the Complaint.
Complainant does argue that Respondent’s use of the domain name to direct Internet users to competing products and businesses causes a disruption to Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). The Panel notes that Complainant’s evidence appears to show a myriad of third-party links displayed on Respondent’s resolving website for both competing and unrelated products. See Complainant’s Annex E. Based upon this evidence the Panel determines that Respondent has registered and is using the disputed domain name in bad faith in order to disrupt Complainant’s business. The Panel so finds, and determines that Complainant has satisfied Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant argues that Respondent is commercially profiting from the third-party links displayed on the resolving website by misleading Internet users as to Complainant’s affiliation with the website and content thereon. The Panel finds that Respondent’s registration of the <enfamilprintablecoupon.net> domain name creates confusion as to Complainant’s affiliation with the website. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant also argues that Respondent had knowledge of Complainant’s famous ENFAMIL mark prior to its registration of the disputed domain name. Complainant notes its long standing use of the ENFAMIL mark and its trademark registrations with the USPTO as proof that Respondent should have had constructive knowledge of Complainant’s rights in the ENFAMIL mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enfamilprintablecoupon.net> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 10, 2012
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